What’s in a colour? When it comes to intellectual property, quite a lot. Trade mark attorney Jean Bruneau discusses colours as trade marks.
The lengths to which French service providers go to differentiate their brands through the use of colour was recently highlighted in an article by global brand consultancy LabBrand. They analyse how a low-cost new entrant in the French telecommunications market effectively disrupted the market, resulting in the three major players launching sub brands.
These sub brands had to be differentiated from the main brands so they could be associated with low cost. The service providers couldn’t use the same colours as their main brands as the association among the brands was too strong. This illustrates the power of colour branding in telecommunications.
Colour as a brand is as important in the South African telecommunications industry as in the French industry. Every segment of the South African population is aware of the four major cellular service providers and would be able to identify them simply by referencing their respective corporate colours: black, red, yellow and blue.
Given the importance of colour and the millions telecoms providers spend on ensuring that their respective colours are associated with their respective brands, brand owners can protect the advertising goodwill or value that has accrued to their brand’s use of colour.
In theory, colours can be registered as trade marks in South Africa. The Trade Marks Act defines a “mark” as any sign capable of being represented graphically, including a colour. A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking. Colours are usually features of a product and consumers aren’t in the habit of making assumptions about the origin of goods based merely on their colour or the colour of their packaging. So in practice applicants wishing to register a colour or colour combinations must overcome difficult obstacles to prove they’re capable of being a trade mark.
It’s useful to examine successful trade mark applications for colours in European jurisdictions as the principles in respect of registrability are similar to those in South Africa. A global search for the colours for our telecoms provides an interesting statistic. Of the 66 trade mark applications filed in various European jurisdictions for single colours and colour combinations in class 38 (telecommunications), 93% were unsuccessful.
The trade mark applications which were successful were those that produced significant evidence showing that the specific colour had acquired distinctiveness through use and by being associated with the trade mark applicant. Most of this evidence was produced by way of market surveys.
The main principles to be taken from the European and UK cases are that single colours can constitute signs that are capable of distinguishing products. But, in order to be registrable as a trade mark the definition of that colour must be unambiguous and “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
As far as the writer is aware, none of the South African telecoms service providers has attempted to register their specific colour as a trade mark and, given the reluctance to grant trade marks for single colours, it’s likely the specifications in respect of such a trade mark application would need to be clearly and precisely defined.
In order to overcome the above obstacle, brand owners could consider compiling evidence of use in respect of all services or goods which they would seek to protect by way of a trade mark application. This evidence of use could be further supported by market surveys that show the specific colour is associated with the service provider in respect of its specified services or goods. Another strategy would be to make use of combination marks. This would entail filing the colour in combination with a logo or tagline.
*Jean is an associate at intellectual property law firm Adams & Adams.